The Intellectual Property Appellate Board (IPAB) has stayed the order of the controller dated 16.08.2019 revoking Novartis’s patent covering the commercial product Ceritinib.

Novartis had filed an appeal against the impugned  order dated 16.08.2019 passed in the post grant opposition proceeding under Section 25(2) filed by Natco against Novartis’s patent 276026 . Due to the delay in appeal proceeding, the appellant had also requested for stay of the operation of the impugned order until the final appeal is decided.

In the stay application, and in the hearing two main issues were raised:-

Issue No.1: Whether the impugned order passed by controller was contrary to the order/direction passed by the Hon’ble Delhi High Court.

In the present case, parties admittedly completed their respective evidence under rules 57 to 61 of the Act. After the completion of pleadings, there is no provision or rule to produce new evidence once the hearing is sppointed. There is a window of sub rule 4 of Rule 62 where either party is allowed to rely on any publication at the hearing by giving notice to the other party and to the controller of not less than five days.

As per the hon’ble board, it is not denied that Natco filed an evidence along with rule 138 application prior to the hearing, i.e., has produced documents other than publication.

Novartis also raised this issue in a writ petition before the Hon’ble Delhi High Court, the Hon’ble Court clearly observed that order shall be passed by the controller hearing the post grant opposition on all the documents placed on record as on 11/07/2019 and no further documents shall be filed by the parties. The reply to additional evidence of Natco was already filed by Novartis on 9.7.2019.

The controller having been made aware of the order of the Delhi high court disregarded the evidence filed by Novartis while passing the impugned order. In fact it is admitted by the counsel appearing on behalf of Natco that rebuttal evidences filed by the appellant have not been considered

In view of above, the Hon’ble IPAB held that, prime facie, it is clear that such important issue raised in the appeal requires consideration.

Issue 2: Whether the Controller was misled by Natco in its pleadings.

In Natco’s pleadings, certain examples are reproduced which are the example taken from impugned Patent 276026 and are cited as example of WO “980 ( IN 653) which is a cited document.

The Hon’ble IPAB agreed that as far as pleading of misleading facts by any party, is concerned, it is no doubt, a serious matter.

The Hon’ble IPAB held that they do not wish to decide the two issues finally, but held that the appellant has made a strong case of stay of the operation of impugned order dated 16.8.2019.